Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status Of Claims
Claims 1-10 are pending and examined below.
Claim Interpretation
The court has held any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989). The preamble statement “a photovoltaic tracking support comprising a stand column and a main beam rotatably supported to the stand column and supporting a photovoltaic module” recites structure, Further, when read in the context of the entire claim language, the preamble recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). The examiner considers the highlighted claim preamble to recite structure of the claim. The examiner notes that both the “stand column” and “main beam” are claimed within the claim body. The claims are examined in light of this claim interpretation.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-10 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 of prior U.S. Patent No. 12/212278. This is a statutory double patenting rejection.
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US 12/212278. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the instant claims are recited within the claims of the cited patent.
Response to Arguments
Applicant's arguments filed 4/30/2026 have been fully considered but they are not persuasive.
Regarding applicant’s statement that a terminal disclaimer had been filed for patent 12/212278, the examiner has verified the USPTO did not receive the terminal disclaimer.
Regarding applicant’s statement that the statutory double patent rejection over 12/212278 is invalid, the examiner disagrees.
The first claim of US patent 12/212278:
A photovoltaic tracking support transmission device, comprising:
a stand column,
a main beam,
a composite chain gear set comprising a first chain gear and a second chain gear, and
a composite chain wheel set comprising a first chain wheel and a second chain wheel,
wherein the main beam is rotatably supported to the stand column and is configured to support a photovoltaic module,
wherein each chain gear comprises a plurality of tooth tips,
wherein the first chain gear and the second chain gear are arranged coaxially and
are further arranged such that the tooth tips of the first chain gear and the second chain gear are not aligned,
wherein the first chain wheel and the second chain wheel are arranged coaxially and
provided in a one-to-one correspondence to, and
configured to mesh with, the plurality of chain gears, and
wherein when the first chain gear and the second chain gear are rotated, the first chain wheel and the second wheel are similarly rotated resulting in a transmission of the main beam.
Below is the first claim of the instant set of claims:
A transmission device for a photovoltaic tracking support (corresponds to numbered line 1 of cited patent above) comprising
a stand column (corresponds to line 2 above) and
a main beam (corresponds to line 3 above)
rotatably supported to the stand column and supporting a photovoltaic module (corresponds to line 6 above),
characterized in that the transmission device comprises (corresponds to line 1 above):
a composite chain gear set having a plurality of chain gears (corresponds to line 4 above)
arranged coaxially (corresponds to line 8 above) and
arranged in a manner that the teeth are staggered (corresponds to line 9),
the composite chain wheel set has multiple chain wheels (corresponds to line 5),
the multiple chain wheels are coaxially arranged (corresponds to line 10 above), and
are in one-to-one correspondence to and meshing transmission with the multiple chain gears (corresponds to lines 11 and 12),
one of the composite chain gear set and the composite chain wheel set is rotatably disposed on the stand column, and the other is connected to the main beam (corresponds to the function cited in line 13).
The rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYNE L MERSHON whose telephone number is (571)270-7869. The examiner can normally be reached 10:00 to 6:00 M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at (303) 297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAYNE L. MERSHON
Primary Examiner
Art Unit 1721
/JAYNE L MERSHON/ Primary Examiner, Art Unit 1721
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